The German Federal Patent Court (BPatG) recently ruled on an unusual cancellation request filed in 2009 by the European Union and involving the protection of the European Union emblem, to be more precise – the logo’s circle of 12 five-pointed stars on its blue background.
Trademark Applicants should pay attention not to file trademarks that contain or imitate elements of flags or state emblems. EUROKURIER GmbH, a company near Munich offering varieties of courier services, has learned this lesson the hard way. Their trademark was now ordered to be cancelled.
Recap: Back in 2008 Eurokurier applied to protect their word/figurative mark at the German Patent and Trademark Office (DPMA). Granted in February 2009 it took not much time until the European Union requested the cancellation of the black and white word/device mark “EUROKURIER” for various customs and transport related services in classes 36 and 39.
The German PTO initially rejected the EU’s cancellation request, applying provisions of the German Trademark Act which correspond to Art. 7 (1) (h) and (i) of the EU Trade Mark Regulation. These provisions exclude signs from trademark protection which incorporate State emblems protected under Art. 6ter of the Paris Convention. The PTO thought that the EUROKURIER sign did not evoke a false impression of an association with EU institutions.
For one thing, the horizontal bar with its winged ends was a conspicuous and unusual design element which in itself did not evoke any association with EU institutions. Furthermore, the examiner did not see the necessary conceptual similarities between the services covered by the mark (mainly transportation related services) and the work of the EU institutions.
2016: Trademark-Protection rejected
The German Federal Patent Court disagreed with the decision made in the lower court. They confirmed that the EU registration which depicts the twelve stars as well as the EU’s flag are symbols and emblems protected under Article 6 of the Paris Convention. The court’s view was that the “EUROKURIER” mark was sufficient enough to be an “imitation” of an official mark of the EU. The court went on to say that the disputed trade mark could be mistaken as being commercially linked to the European Union. In fact, the reasonable person would assume that “EUROKURIER” was an official courier service to the EU institutions.
The court therefore ordered to cancel the trademark with the number 30 2008 032 360.
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Translation of the Press Release German Federal Patent Court (German)
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